In 1991, artist and designer Erik Brunetti launched a clothing line. In 2017, Brunetti filed an application with the United States Patent and Trademark Office (USPTO) to register the trademark representing this brand—FUCT (“Friends U Can’t Trust”). The USPTO refused registration of the mark because the Federal statute governing trademarks—the Lanham Act—prohibited registration of any trademark that
Too Scandalous to Trademark?
Reviewing the FUCT application, the USPTO applied its general test of for those marks that might be considered as comprised of immoral or scandalous matter. That is, whether a substantial composite of the general public would find a trademark shocking to the sense of truth, decency or propriety or whether the mark would give offense to conscious or moral feelings. Against this, the USPTO concluded the FUCT mark was totally vulgar, highly offensive and had “decidedly negative sexual connotations.” Therefore, the Lanham Act prohibited registration and Brunetti’s application was refused.
First Amendment Lawsuit
Brunetti filed suit, claiming the “immoral or scandalous matter” provision of the Lanham Act was an unconstitutional violation of the First Amendment. The United States Court of Appeal for the Federal Circuit agreed with Brunetti and found this provision unconstitutional. The Government appealed and on June 24, 2019, in a 6-3 decision written by Justice Kagan, the Supreme Court upheld the Federal Circuit’s determination and struck the provision as unconstitutional.
The Brunetti case follows an earlier decision, Matal v. Tam, 582 U.S. ____ (2017) that interpreted a similar provision of the Lanham Act. In 2017, the Court considered a First Amendment challenge to a prohibition to registration of marks that were “disparaging.” The Tam case considered refusal to register the mark SLANTS based on USPTO arguments that the term was disparaging to Asians. The Court struck the provision because, in practice, it constituted viewpoint discrimination under the First Amendment. That is—it left the Government in charge of determining what was disparaging and therefore in a position where it could impose its viewpoint.
Per Justice Kagan, as in Tam, the “immoral or scandalous matter” provision of the Trademark Act gave too much discretion to the Government and the power to determine exactly what is, or is not, “scandalous or immoral.” Accordingly, the Government could impose its viewpoints and restrict competing viewpoints, which constitutes a violation of the First Amendment.
Impact of Brunetti Decision
After Brunetti, a class of trademarks that before were considered unregistrable might now be able to obtain some measure of protection. While the gates to wholesale registration of profanity are not likely open, it will not be surprising to see more marks that contain, or play upon, such terms.